1. Key takeaways
Revocation of European patents can be limited to specific UPC Member States upon request (Art. 34, 76(1) UPCA; Rule 44(d) RoP)
The Court confirmed it may revoke a European (bundle) patent only for the national part(s) specified by the claimant, not necessarily for all UPC Member States.
This approach respects the adversarial nature of proceedings and the principle of ne ultra petita in civil proceedings not to award to the parties more than requested.
"Added matter" doctrine strictly applied: claims must not generalize beyond the parent application (Art. 138(1)(c) EPC; Art. 76(1), 123(2) EPC)
The patent was revoked because the granted claims allowed for
upshifting to the "highest quality" stream,
which was not directly and unambiguously disclosed in the parent
application. The parent application at most discloses that an
upshift to a higher quality, or the next higher quality stream may
be considered.
The Court emphasized that only what is clearly and unambiguously
disclosed can be claimed.
Auxiliary requests must effectively address grounds of invalidity and be timely (Rules of Procedure)
Defendant's auxiliary requests failed to overcome the added
matter objection, as they did not sufficiently amend the
problematic claim language.
Late-filed auxiliary requests were not admitted
(ORD_69035/2024).
Stay of proceedings for parallel EPO opposition is exceptional and must be justified (Art. 33(10) UPCA; Rule 295(a) RoP)
The Court refused to stay the proceedings, citing the advanced
stage of the case and the need for expeditious and predictable
decisions.
The interests of the parties and procedural efficiency were
balanced, with reference to proportionality and fairness.
2. Division
Central Division Paris
3. UPC number
UPC_CFI_198/2024 (ACT_23310/2024)
4. Type of proceedings
Revocation action
5. Parties
Claimant: Aylo Premium Ltd.
Defendant: DISH Technologies L.L.C.
6. Patent(s)
EP 3 822 805 B1
7. Jurisdictions
UPC (limited to the German part of the European patent)
8. Body of legislation / Rules
Rule 44(d) RoP
Rule 295(a) RoP
Rule 118.5 RoP
Art. 34 UPCA
Art. 76(1) UPCA
Art. 33(10) UPCA
Art. 69(1) UPCA
Art. 138(1)(c) EPC
Art. 76(1), 123(2) EPC
Art. 5(2) Regulation (EU) No. 1257/2012
Art. 73(1) UPCA (appeal)
Art. 82 UPCA (enforcement)
Rules 118.8, 158.2, 354, 355.4 RoP
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
